Lifinia Pty Limited v Oroton Pty Limited

Oroton Pty Limited ("the opponent") opposed the registration of two trade mark applications, numbers 531959 and 531960, filed by Lifinia Pty Limited ("the applicant") for "handbags" and other goods in Class 18. The opponent lodged its notice of opposition on several grounds, including that the applicant was not the proprietor of the marks, that the marks were not distinctive, that registration would cause deception or confusion due to similarity with the opponent's trade marks, and that the applicant did not intend to trade in all the specified goods. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant was the proprietor of the trade marks under section 40 of the Act, and whether the registration of the marks would be likely to deceive or cause confusion, or otherwise not be entitled to protection, under sub-paragraph 28(a) and (d) of the Act. The delegate also considered the opponent's arguments regarding the applicant's alleged "blameworthy conduct" in applying for registration.

Regarding the proprietorship issue under section 40, the delegate found that the applicant's marks, CITY GIRL and CITY GEAR, were not substantially the same as the opponent's marks, STANDARD CITY GIRL EQUIPMENT and STANDARD CITY EQUIPMENT. The delegate determined that the marks were not identical or nearly identical, and that the additional words in the opponent's marks altered their meaning and identity. Furthermore, the delegate concluded that the opponent had abandoned its earlier mark, STANDARD CITY GIRL EQUIPMENT, by late 1989, and therefore was not the proprietor of that mark at the relevant date of application. On the issue of confusion and deception under section 28, the delegate held that the mere application to register a trade mark did not constitute "blameworthy conduct" in the absence of evidence of bad faith or intention not to use the mark. The delegate found that determining the applicant's conduct as beyond sharp business practice was outside the scope of the Registrar's powers.

Consequently, the delegate dismissed the opposition, finding that the applicant had discharged its onus to show that its marks should be registered. The delegate directed that the applications proceed to registration and awarded costs to the applicant.